VOL X                                                  ISSUE NO. 22                                        Ocotober 30, 2018


In This Issue

India: ‘Magic Rice’ Belongs to Assam

The ‘magic’ Boka Saul, a century old breakfast staple in Assam, recently got a Geographical Indication Tag. In 2016, a Nalbari based NGO Baishya’s Lotus Progressive Centre and Simanta Kalita of Centre for Environment Education (CEE), Guwahati, applied for a GI tag for the rice. Hemanta Baishya, founder-member of Lotus Progressive Centre (LPC), was quoted telling a newspaper daily, that ‘Our years of hard work have finally paid off. The main aim with which we applied for the GI tag was to ensure the well-being of farmers that are dependent on this particular variety of rice. Farmers, who up till now were just growing it for themselves, will now be able to grow it for a wider audience. The Boka rice, we hope, will become a commercially-viable crop,’

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Afghanistan: Important Declaration on Recording of Licenses in the International Register Under Madrid System for International Registration of Marks

Important Declaration on Recording of Licenses in the International Register Under Madrid System for International Registration of Marks in Afghanistan.

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India: Delhi High Court restricts the infringement of the mark ‘John Deere’

Recently, the Hon’ble Delhi High Court, passed an order in the case of Deere & Company & Anr vs. Malkit Singh & Ors, in favor of Deere & Co. issuing an interim injunction against Mr. Malkit Singh & Ors holding that Malkit Singh has infringed the trademark and trade dress of Deere & Co.’s products in bad faith.

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IPR: A Fuel for Brand Building in India

Recently, Suresh Prabhu, Minister of Commerce and Industry, also commented on the importance of IP protection for effective brand building.

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India: Likely Preference: Tax Exemption or Trademark Protection?

Through a notification issued on June 28, 2017, the Central Government fixed a 5 per cent Goods and Services Tax (GST) rate on food items packaged in unit containers and bearing registered brand names. On July 5, 2017, the Ministry of Finance issued a clarification addressing the confusion about the phrase “registered brand names”.

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Bio-piracy initiative by India

Last year, India had initiated discussion at WTO about the issue of bio-piracy. The same discussions have been revived with an international session regarding bio-piracy being co-organized by India next month in collaboration with a Geneva based inter-governmental organization.

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India: ‘Magic Rice’ Belongs to Assam

 

 

 

The ‘magic’ Boka Saul, a century old breakfast staple in Assam, recently got a Geographical Indication Tag. In 2016, a Nalbari based NGO Baishya’s Lotus Progressive Centre and Simanta Kalita of Centre for Environment Education (CEE), Guwahati, applied for a GI tag for the rice. Hemanta Baishya, founder-member of Lotus Progressive Centre (LPC), was quoted telling a newspaper daily, that ‘Our years of hard work have finally paid off. The main aim with which we applied for the GI tag was to ensure the well-being of farmers that are dependent on this particular variety of rice. Farmers, who up till now were just growing it for themselves, will now be able to grow it for a wider audience. The Boka rice, we hope, will become a commercially-viable crop,’ [1]

 

Boka Sauk or the ‘Magic Mud Rice’ as it is popularly known, is a paddy variety grown in parts of lower Assam i.e., Nalbari, Barpeta, Goalpara, Kamrup, Darrang, Dhubri, Chirang, Bongaiagoan, Kokrajhar and Baksa. It is sown in the month of June and harvested in December also known as ‘Xaali’ season locally. The consumption tradition of the rice dates back to 17th Century, when Boak Saul was consumed by the Ahom soldiers while they were fighting against the vast Mughal army.

 

Its specialty lies it the fact that it is a unique ‘zero fuel’ rice variety. Hemanta Baishya, founder-Member of Lotus Progressive Centre, in an interview said ‘Boka saul requires zero fuel. The rice does not need to be cooked[2]. All that is needed to be done is soaking the rice in cold water for about an hour to swell and its ready to eat. According to a study by the Guwahati University’s Biotechnology Department, Boka Saul has 10.73 per cent fibre content and 6.8 per cent protein. The rice is highly nutritious, and it also cools down the body. Simanta Kalita of Centre for Environment Education (CEE), Guwahati told The Indian Express, ‘During floods, this is a great emergency food for obvious reasons. Going ahead, we hope the government will consider it for its relief programme.’

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[1]http://www.guwahatiplus.com/article-detail/a-lot-can-happen-over-assam-s-
magic-rice-boka-chaul 
[2]https://indianexpress.com/article/north-east-india/assam/the-rice-that-needs-
no-cooking-magic-rice-variety-from-assam-gets-gi-tag-5299318/ 

 

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Afghanistan: Important Declaration on Recording of Licenses in the International Register Under Madrid System for International Registration of Marks

 

Source: www.wipo.int

 

In accordance with Rule 20bis(6)(b) of the Common Regulations as provided under the Madrid System for International Registration of Marks, the Government of Afghanistan has recently declared that the recording of licenses in the International Register shall have no effect in Afghanistan.

 

Consequently, a license relating to a mark in an international registration designating Afghanistan shall, in order to have effect in that Contracting Party, be recorded in the National Register of Afghanistan. The formalities required for such recording must be completed directly with the Office of Afghanistan and according to the conditions laid down by the legislation of that Contracting Party.

 

The declaration made by the Government of Afghanistan under the above-mentioned Rule came into force on June 26, 2018, which is also the date of coming into force of the Madrid Protocol with respect to Afghanistan.

 

 

 

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India: Delhi High Court restricts the infringement of the mark ‘John Deere’

 

  

 

Source: www.delhihighcourt.nic.in

 

 

 

The Hon’ble Delhi High Court, on May 23, 2018, passed an order in the case of Deere & Company & Anr vs. Malkit Singh & Ors, in favor of Deere & Co. (hereinafter referred to as the “Plaintiff”) issuing an interim injunction against Mr. Malkit Singh & Ors (hereinafter referred to as the “Defendant”) holding that the Defendant has infringed the trademark and trade dress of the Plaintiffs products in bad faith. The case is listed before the Court on July 30, 2018, for disposal as well as for framing of issues and for case management hearing.

 

Brief Facts

  • The Plaintiffs, a company existing under the laws of the State of Delaware, USA are leading manufacturers and exporters of agricultural vehicles including tractors, harvesters, etc. as well as their spare parts under the trademark JOHN DEERE. The products of the Plaintiffs are easily identifiable by their distinct share of green paint, augmented by yellow strip.

  • The Plaintiffs have secured registrations for a number of its JOHN DEERE trademarks, including the (green yellow) trademark, under various classes, including Classes 7, 12 and 28 under the Trademarks Act, 1999.

  • In the last week of October 2017, the Plaintiffs came to know that the Defendants were manufacturing, selling, exporting and advertising infringing products under the mark MALKIT by using an identical color combination as that of the Plaintiffs. Thereafter, a Cease and Desist notice was sent to the Defendants. In response, the Defendants emphasized that they had rights over its Green and Yellow mark.

  • On further investigation, it was found that the Defendants were engaged in the manufacture, supply, export and sale of infringing tractors and agricultural equipment like Combine Harvesters, Rice Transplanter, Thresher, Straw Reaper, Mini Harvester etc. with an average production of 350 harvesters a year in Uttaranchal, MP, Andhra Pradesh, UP and Delhi.

  • The present suit has been filed for permanent injunction restraining infringement and dilution of a trademark by the Defendant, passing off of trade dress, unfair competition, rendition of accounts, delivery up, damages, etc.

Issues

  1. Whether the Defendants have adopted a mark similarly deceptive to that of the Plaintiff in bad faith?

Plaintiffs Mark

 

It is stated in the plaint that the Plaintiffs’ ‘leaping deer’ logo comprises an image of a yellow deer in conjunction with the trademark ‘John Deere’. It is further stated that a particular combination of the Green and Yellow colors for its agricultural implements i.e. green color for the body and yellow color for the seat and the wheels/rims.

Plaintiff’s Contentions

  1. The Plaintiff contended that the Green and Yellow color combination had become so synonymous with the Plaintiffs that the particular shades of Green and Yellow are commonly referred to as John Deere Green and John Deere Yellow and the logo and the Green and Yellow color combination used by the Plaintiffs have collectively been termed as the JOHN DEERE marks

  2. The Plaintiff submitted that the Defendant is engaged in the manufacture and supply of goods that are similar to the goods of the Plaintiff i.e., tractors and agricultural equipment. Further, the Defendants also advertise their products through various online portals like, www.malkitcombines.com , www.combineharvestor.co.in , www.justdial.com . The Defendants’ activities clearly evidence their intention to ride upon the reputation and established goodwill of the Plaintiffs’ products under the JOHN DEERE marks.

 

  1. The Plaintiff contended that the Defendants had adopted and used identical trade dress, wherein the color scheme, getup, layout, manner of placement of various parts of the equipment is identical to the trade dress of the Plaintiffs’ JOHN DEERE products and its Green and Yellow color combination and the same is bound to create a false impression in the minds of unwary consumers and members of the trade that, the Defendants are somehow associated with the Plaintiffs’ business and that the Defendants have been specifically authorized to provide their goods and products under the John Deere trademarks by the Plaintiffs themselves.

  2. The Plaintiff further relied on Deere & Co. & Anr. v. S. Harcharan Singh & Ors., wherein a Coordinate Bench of this Court gave an order dated March 5, 2015, recognizing the immense goodwill and reputation vested in the Plaintiffs’ said marks and has held such marks to be well-known trademarks as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.

 

 

Defendant’s Contention

  1. The Defendant stated that the the impugned color scheme for combine HARVESTOR was in use by the Defendant, was in the knowledge of the Plaintiff at least since 2008. In addition to the above, the predecessor of the Defendant has been using the impugned color scheme since 1988.

  2. He further states that the Ministry of Agriculture took products of both the parties for testing purposes in 2015, and therefore, the Plaintiffs are deemed to have been aware of the Defendants’ use of the impugned color combination since 2015.

Rejoinder

 

In the rejoinder, the Learned Counsel for the Plaintiffs stated that the defenses sought were an afterthought and contrary to the Defendant’s own reply to the cease and desist notice. He pointed out that in reply to the cease and desist notice the Defendants had taken the stand that the color combination being used by them was totally different from the Plaintiffs’ color combination and asserted that they (the Defendants) had monopolistic copyright in the color combination.

 

Court’s View

  • The Court opined that the Plaintiffs’ were entitled to sole and exclusive use of this trade mark comprising such color combination (trademarks include combination of colors by virtue of the definition under Trademarks Act, 1999) as well as the right to claim an injunction in respect of infringement of rights due to the fact that they had secured registration for the trademark comprising a color combination of green and yellow.

  • The Court was of the view that the Plaintiffs’ Green and Yellow color combination has been used for 100 years over the agricultural products and even the tractors (green color for the body and yellow color for the seat and the wheels/rims), therefore, the mark/combination is reputable, distinctive and stands as an instant source-identifier for the Plaintiffs’ agricultural products.

  • The Defendants’ adoption of an identical color combination, its use in the same manner as that of the Plaintiffs and its denial of the Plaintiffs’ rights in the said color combination in its reply to the legal notice amounts to unfair advantage and constitutes behavior which is contrary to honest and industrial practices. Therefore, the Defendants action amounts to infringement of the Plaintiffs’ trademark.

  • Consequently, the Court till further order, ordered an interim injunction restraining the Defendants and related parties to deal with the agricultural equipment with Plaintiffs mark.

     

    The matter is listed before the Court on July 30, 2018, for disposal of I.A.3692/2018 as well as for framing of issues and for case management hearing.

 

 

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IPR: A Fuel for Brand Building in India

 

  

 

Building a unique brand is essential for every business, be it involved in manufacturing, distribution of products or delivery of services. Businesses rely significantly on their brand value and reputation for commercial growth and consumer base expansion. However, more than establishing a brand, it is important to get its exclusive proprietorship. Intellectual property is one of the most crucial asset of a company which makes it imperative to protect it and safeguard it against unwarranted use and wrongful gain. Even if a brand is capable of defending itself against exploitation by unscrupulous competitors, it is necessary to seek as much legal protection for the established goodwill as possible.[1] Recently, Suresh Prabhu, Minister of Commerce and Industry, also commented on the importance of IP protection for effective brand building.

 

The misconception that trademark registration is useful only for MNCs and large corporations is widespread and for that reason many small businesses and entrepreneurs are discouraged to protect their businesses’ intellectual property. They fail to recognize the benefits of registration, like the financial benefits which include opening up opportunities for licensing revenue, franchise, increased exit valuations and increased borrowing prospects, that are possible with formal registration which gives legal reinforcement to a company’s use of their intellectual property. Monopoly rights which help to prevent third parties from creeping into your territory by using an identical or confusingly similar mark on identical or similar products are granted to the proprietor by protection of intellectual property.[2] Other benefits of protecting the intellectual property include the ability to use the registrations within market messaging. Geographical indications can also add value to brand image by boosting perceived quality like Darjeeling tea. [3]

 

 

 

 

 

Intellectual property, however, is not an end in itself but a powerful means for achieving the end of brand success. Their value is much more than being passively available on a register. They must be used creatively and should be used as commercially valuable assets than mere legal concepts and enforceable rights. This can be achieved primarily by putting them to work as tools for creating and developing a brand value for fostering the business.[4] Strong brand image is a result of various efforts like the brand strategy, communication, marketing, media usage, quality control, trying to have an edge over the competitors. Even though the unregistered trademarks are protected as the proprietor has a recourse to common law remedies like passing off. However, they offer a very narrow scope of protection and a limitation on assertion of the proprietary rights. Therefore, trademark registration is recommended since it makes the proprietor the exclusive owner of the intellectual property across the applicable territory.

 

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[1]https://www.brandingstrategyinsider.com/2008/03/branding-and-tr.html#.Wx4JCdWWa1s 
[2]https://www.footanstey.com/updates-a-publications/3057-the-importance-of-
protecting-your-brand 
[3]https://www.innovation-asset.com/blog/building-and-sustaining-brand-image-
with-intellectual-property 
[4]http://www.wipo.int/sme/en/documents/branding_fulltext.html 

 

 

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India: Likely Preference: Tax Exemption or Trademark Protection?

 

  

 

 

The Goods and Service tax regime covered different aspects of trade and commerce under its ambit and the intellectual property regime is no exception to it. Through a notification issued on June 28, 2017, the Central Government fixed a 5 per cent Goods and Services Tax (GST) rate on food items packaged in unit containers and bearing registered brand names. [1] On July 5, 2017, the Ministry of Finance issued a clarification addressing the confusion about the phrase “registered brand names”. It stated that,

 

“Unless the brand name or trade name is actually on the Register of Trade Marks and is in force under the Trade Marks Act, 1999, CGST rate of 5% will not be applicable on the supply of such goods” [2]

 

Further, with respect to the term “packaged”, the Finance Ministry clarified that goods such as chhena, paneer, natural honey, wheat, rice, pulses and cereal flours are not taxed under GST. However, if these items are packaged in ‘unit container’ that carries a registered brand name, it will attract 5% GST.[3] The ostensible rationale behind introducing the additional tax is to level the playing field between the high profit margin companies that benefit from their brand’s established goodwill and the companies that sell non–branded goods in the market. However, due to a plethora of loopholes in the tax policy, the intended objective seems far from getting realized. This step is posing more of a problem than a solution. This exemption in a way is pulling down the culture of trademark protection which it is conscientiously trying to nurture.

 

One of the crucial factors that governs the choice of the companies, irrespective of their operating size, is the high price elasticity of the basic food items covered under the provision. Due to this, the choice between maintaining a registered trademark and have the consumers incur 5% addition cost, or getting the trademark registered is obvious.

 

The small traders are suffering. According to Confederation of All India Traders (CAIT) ‘About 50 corporate houses are producing food grain, pulses and other agro commodities aggregating to nearly 15 per cent of the total market under their respective registered brand name whereas rest of the 85 per cent is being produced by SMEs out of which about 40 per cent SMEs are conducting their business operations with registered trade mark.’ Thus, most of the SMEs have registered their brands in order to fall in the category of good quality product. Therefore, even the government target group is not getting the benefit of the decision as envisioned. This is just going to boost adulteration in market wherein even after giving good quality produce the poor farmers are going to earn way less than what they deserve.

 

Even the big established players of the market have been seen taking undue advantage of the provision to maintain their hold in the market. Although the provision was originally envisaged to incentivize the small traders, many established companies that dominates the rice market in India remains exempted from paying the GST since the brand name is unregistered under the Trade Marks Act, 1999. These practices not only dilute the intended benefit for the small traders but also expose the companies to the risk of enforcing their unregistered trademarks and protecting their goodwill.

 

 

While the common law remedy of passing off is available for the protection of unregistered trademarks against unscrupulous activities, there is evidently a higher degree of protection for the registered trademarks guaranteed under the Trade Mark Act. The stringent tests of passing off, for instance, increase the burden of proof on the Plaintiff which often becomes tedious to qualify and hence results in the denial of justice. Apart from establishing deceptive similarity of the two marks, the Plaintiff is also required to prove that deception causes confusion among the public and there is likelihood of injury to the Plaintiff’s goodwill. The degree to which the Plaintiff’s business has actually been damaged by passing off is requisite to decide the quantum of damages. Contrastingly, the Trade Marks Act provides for actual damages to be paid where these can be shown, or, alternatively, for a "reasonable royalty" to be paid. Clearly, evaluating the actual impact of unlawful use of business’ goodwill is a challenging job.

 

Furthermore, jurisdictional requirements for filing a suit can also be to the detriment of the Plaintiff in the case of passing off. In a case against passing off, the suit is required to be filed in the jurisdiction where the Defendant is residing, working for gain or carrying out its business or where the cause of action has arisen. This may put the Plaintiff in a position of disadvantage as he/she may lack familiarity with the Defendant’s place of business and local Courts. Apart from the comparative ease in enforcement of the trademarks, other advantages like free assignability of the trade marks from one party to another also incentivize the proprietors to realize the full potential of their brand name in the market.

 

From the consumers’ perspective, the GST policy is expected to increase the presence of the counterfeit products in the market. There will be a higher chance of a consumer getting misled about the origin and quality of the products in the absence of trademark. It would not only affect the goodwill of the established brand names but can also pose a health hazard due to lower quality and hygiene standard of the counterfeit goods.

 

However, due to the price factor, the provision discourages the MSMEs from registering their trademarks and hinders the development of a trade mark protected commerce in India. The effects of the provision not only defeat the objective of trademark protection but is also disruptive for the National IPR Policy 2016 which encourages commercialization of IP at the grass-root level. The ruling authority itself is bringing imbalance in the economy by defeating the strength of small scale industries by taking away their strongest weapon i.e. trademark. More than protecting just one segment of the market the focus should be on bringing homogeneity in the market for all the players as well as all the sectors of the market.

 

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[1]http://www.cbec.gov.in/resources//htdocs-cbec/gst/CGST%20rates%20for%
20Goods%20under%20different%20Notifications%20%20as%20amended%
20from%20time%20to%20time.pdf 
[2]http://pib.nic.in/newsite/PrintRelease.aspx?relid=167146
 [3]https://www.financialexpress.com/economy/cgst-wont-apply-on-items-not-
registered-under-trademark-law/751422/ 

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Bio-piracy initiative by India

 

  

 

India has always been at the forefront when it comes to a debate about misappropriation of its traditional knowledge by corporate entities and foreign research organizations. The traditional knowledge is considered as information about natural products carried over by communities through generations without proper account or documentation of the same. Recently, the debate has been curated (articulated) as involving issue of bio-piracy, where an entity makes use of traditional knowledge illegally and reaps benefits out of such exploitation without prior consent of communities and sharing any benefits with communities. [1]

 

Last year, India had initiated discussion at WTO about the issue of bio-piracy. The same discussions have been revived with an international session regarding bio-piracy being co-organized by India next month in collaboration with Geneva based inter-governmental organization South Centre. The number of communities’ representative from Brazil, Australia, New Zealand, China, Namibia, Peru and the United States will be participating in the session along with Zo Indigenous Forum, a human rights-based indigenous people’s organization in Mizoram. [2]

 

India along with developing countries is demanding mandatory disclosure under Patent law of two kinds of information by patent applicants:

  • Source or origin of biological resources; and

  • Evidence of prior informed consent and benefit sharing with communities.[3]

 

Disclosure of such information by patent applicants will result in reducing the chances of exploitation of traditional knowledge propagated among local communities.

 

In the past, the Indian Parliament has passed legislation and also made amendment to existing legislation for protecting interest of communities in traditional knowledge. National Biodiversity Act protects traditional knowledge by regulating use of such information by a foreigner, Indian citizen, and body corporate controlled by foreigner/Indian citizen. The said Act also have requirement of prior permission by entity seeking IPR protection based on knowledge/information obtained from Indian communities. Section 3 (p) of the Indian Patent Act, 1970, also bars the patent protection for invention involving use of traditional knowledge or any duplication or aggregation of such knowledge. Further, there is protection provided under Protection of Plant Varieties and Farmers Rights Act 2001, Geographical Indication of Goods (Registration and Protection) Act 1999, and Scheduled Tribes and other Traditional Forest Dwellers (Recognition of Forest Rights) Act, 2006.

 

 

Other initiatives by India include Traditional Knowledge Digital Library which is a digitized traditional medicinal knowledge available in public domain in the form of existing literature (Ayurveda, Unani, Siddha and Yoga).[4] This initiative was formulated in backdrop of revocation of patent on wound healing properties of turmeric at the USPTO and patent granted by European Patent Office on antifungal properties of neem. TKDL has increased access to traditional knowledge and use of such knowledge for beneficial purposes.

 

At international level, Convention on Biological Diversity has envisioned three objectives including conservation of biological diversity, the sustainable use of its components, and equitable sharing of benefits arising from utilization of genetic resources. Under this convention, Nagora Protocol was incorporated for providing access to genetic resources and fair and equitable sharing of benefits arising out of their utilization. The Protocol intends to create incentives to conserve biological diversity, sustainable use of its components and further enhance the contribution of biological diversity to sustainable development and human well-being. [5]

 

The session on bio-piracy is a move to realize the inherent right of indigenous communities over such traditional knowledge. Such sessions intend to build pressure on developed countries to amend their domestic laws incorporating requirement of making disclosures as discussed above. India and other developing countries has already proposed to amend TRIPS agreement with such requirement.

 

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[1]http://birac.nic.in/webcontent/dib.pdf
[2]https://economictimes.indiatimes.com/news/politics-and-nation/india-to-organise-
meet-on-biopiracy-in-geneva/articleshow/64360161.cms
[3]https://economictimes.indiatimes.com/news/politics-and-nation/india-to-organise-
meet-on-biopiracy-in-geneva/articleshow/64360161.cms
[4]http://www.wipo.int/edocs/mdocs/tk/en/wipo_iptk_ge_2_16/wipo_iptk_ge_2_16_
presentation_12javed.pdf
[5]https://www.cbd.int/abs/doc/protocol/nagoya-protocol-en.pdf 

 

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